萬國法律事務所

A significant amendment to Taiwan’s Patent Act has been proposed with respect to simultaneous applications for Invention and Utility Model Patents. If passed and enacted, such applications will utilize “Right Continuation” approach. The draft amendment will be reviewed by the Legislation Yuan in its next session. In the current draft of the amendment, where both the Invention and Utility Model Patent applications pass examination and the applicant decides to maintain the Invention Patent, the Utility Model Patent right will not be deemed as never having existed.

According to the current Patent Act, patent rights are classified into three categories, namely Invention Patents, Utility Model Patents and Design Patents. The examination period for an Invention Patent is approximately 46 months and the product based on the patent may during that time lose its competitive advantage or be copied before the applicant is granted a patent. However, the product based on the patent can also be protected if the applicant also files for a Utility Model Patent, and the examination period for a Utility Model Patent is much shorter, at only 4 to6 months.

The Taiwan Patent Act allows the applicant to “apply for two patent rights for one product”. In other words, an applicant can file for an Invention Patent and a Utility Model Patent for one product, provided that the applicant must select one of the patents when both patent examinations are passed. If the applicant selects the Invention Patent, he must give up the protection he had under the granted Utility Model Patent, and such protection is then deemed as never having existed.

Legislator Lee Gui-Min believes that this situation is inappropriate and has proposed the draft amendment of the Patent Act, which adopts the approach of “Right Continuation”, and provides that after the Invention Patent is approved, the Utility Model Patent becomes invalid if the applicant chooses to maintain the Invention Patent rather than the Utility Model Patent, and the product would from then on be protected by the Invention Patent. It should be noted that the Utility Model Patent would not be deemed retroactively invalid. Rather, the product will be protected by the Utility Model Patent until the applicant chooses to maintain the Invention Patent, instead.